806.03(c)
Amendment From §1(a) to §1(b)

In an application filed under §1(a), if the §1(a) basis
fails, either because the specimens are unacceptable or because the mark was not in
use in commerce when the application was filed, the applicant may substitute §1(b) as
a basis and the application will retain the original filing date. The USPTO will
presume that the applicant had a continuing valid basis unless there is contradictory
evidence in the record. 37 C.F.R. §2.35(b)(3).

Although there is a presumption of a continuing valid
basis, when amending from §1(a) to §1(b) in a trademark or service mark application,
the applicant must confirm the presumption by submitting a verified statement that
the applicant has a bona fide intention to use the mark in commerce, and that the
applicant had a bona fide intention to use the mark in commerce as of the application
filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2). See TMEP
§§1303.01(b)(i), 1304.02(b)(i), and 1306.02(b)(i) for the verified statement for a §1(b)
application for collective and certification marks.

If the applicant wishes to substitute §1(b) as a basis
after publication of an application filed under §1(a) that is not the subject of an
inter partes proceeding before the TTAB, the applicant must petition the Director to
allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). In a
multiple-basis application, if a notice of allowance has issued for those
goods/services/classes based on §1(b), the petition will not be granted unless a
request to divide the application is submitted with the petition. The
goods/services/classes to be amended from §1(a) to §1(b) must be divided out in order
to process the amendment because republication is required. (37 C.F.R. §2.35(b)(2)).
The petitioner may include all the goods/services/classes based on §1(a) in the child
application or only those to which the amendment to §1(b) applies. If dividing within
a class, in addition to the fee for filing a request to divide, an application filing
fee is required. See 37 C.F.R. §2.87 and TMEP
§§1110–1110.11(a) regarding requests to divide
applications.

The amendment of an application that is the subject of
an inter partes proceeding before the TTAB is governed by 37 C.F.R. §2.133(a).

Note that in a §1(b) application, once an applicant has
filed a statement of use, the applicant may not withdraw the statement of use.
37 C.F.R. §2.88(f); TMEP §1109.17. Thus, an applicant
may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.
See TMEP § 1104.11 regarding withdrawing an
amendment to allege use.